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John M. Carson 12790 El Camino Real |
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Patents Trademarks Copyrights Licensing Trade Secrets Domain Names Technical Areas of Emphasis Electrical/Computers Physics & Optics Semiconductor Fabrication Software, Internet and Data Processing Telecommunications Professional Profile John M. Carson is a partner in our San Diego office. His practice involves representation of clients in the computer software, image processing, Internet, personal computer, telecommunications and semiconductor industries. His practice is international in scope with an emphasis on European and Eastern Asian patent protection. His clients range from Fortune 500 companies to small businesses, and also include small capitalization, publicly traded companies, as well as emerging and venture capital financed companies. Mr. Carson is familiar with patent and copyright acquisitions and other technology transactions. Prior to joining the firm, Mr. Carson was employed at TRW. While working at TRW, he was responsible for all phases of software development and systems engineering, both technical and managerial, in the fields of satellite communications, digital signal processing, computer networks and military avionics. His work included applied research into real-time artificial intelligence software and he held a Department of Defense secret security clearance. Mr. Carson is the treasurer of the International Technology Law Association, authoring comments on recent opinions by the Court of Appeals for the Federal Circuit, and the U.S. Correspondent for the European Intellectual Property Review. He is a past chairman of the University of California, San Diego (UCSD) CONNECT Financial Forum. He has appeared on KPBS Radio and UCSD television. In addition, Mr. Carson has given presentations before events sponsored by the American Chamber of Commerce and the State Bar of California. Mr. Carson has written numerous papers published in the U.S., Europe, Japan and Korea. Mr. Carson is a past board member of the San Diego Council of the American Electronics Association. He is also a past member of a San Diego community town council and planning board. He is listed in the Who's Who of e-Commerce Lawyers (2nd Edition). Mr. Carson joined the firm in 1988 and became a partner in 1992. Education University of San Diego School of Law (J.D. 1988) Legal Studies, University of Oxford, Magdalen College (1987) University of Southern California (M.S. Computer Science 1983) University of California, San Diego (B.A. Computer Science 1981) Admissions/Qualifications State Bar of California Registered to practice before the U.S. Patent and Trademark Office Southern and Central Districts of California Court of Appeals for the Federal Circuit U.S. Supreme Court Professional Memberships & Affiliations
International Federation of Computer Law Association (IFCLA) Moderator, “Convergence Legal Aspects,” Helsinki, June 10, 2010 Session President of International Federation of Computer Law Association (IFCLA), “IT Law Challenges in a Changing World: Global, Virtual, Open & Outsourced,” Paris, France, June 5-6, 2008 UCSD von Liebig Center Reviewer, San Diego Clean Tech Innovation and Commercialization Program, May 13, 2010 AIPPI Chairman, AIPPI's Working Question Committee Q216 Copyright and High Tech, 2010 International Technology Law Association President 2008-2009 Vice President 2007-2008 Treasurer 2006-2007 Secretary 2005-2006 Computer Law Association Assistant Secretary 2004-2005 Chairman, Roundtable Committee and Board Director 2002-2004 Founder, Information Technology Writing Competition 2000-2003 Conference Program Coordinator, “Counseling the Internet Entrepreneur” 2000 Chairman, Membership Committee and Board Director 1999-2001 Case Reporter, Northern California/C.A.F.C. 1996 California Membership Chairman 1992-1997 U.C.S.D. CONNECT Chairman, Financial Forum 1997 Advisor, Making Money in Telecommunications 1996 Advisor, Financial Forum 1994-1998 Advisor, Making Money in Multimedia, 1994-1995 Director, Defense Entreprenurial Program 1993-1994 American Electronics Association Chairman, Education Committee 1993-1994 University of San Diego, School of Law Member, Endowment Campaign Committee 2006-2007 Law Firm Challenge Representative 2004 Board Member, Board of Visitors 2002-2006 European Intellectual Property Review United States Correspondent 1999 – Intellectual Property Owners Association Annual Meeting Program Committee Member 2008 Member, Open Source Committee 2003- Software Industry Council Director, Software Investment Conference 1998 IEEE Co-Chairman, Data Engineering Conference 1984 San Diego County Bar Arbitration Committee Federal Bar Association Teaching/Adjunct Professor Adjunct Professor, Patent Law, California Western School of Law, 2001 Adjunct Professor, Copyright Law, Thomas Jefferson School of Law, 1997-1998, 2002 Guest Lecturer, U. of California, San Diego, Issues in International Political Economy: Intellectual Property, 2004 Guest Lecturer, U. California, Irvine Extension, International Intell. Property, 1995 Guest Lecturer, Patents & Trade Secrets, U. of San Diego, 1990-1992, 1995 Guest Lecturer, Compiler Design, Cal. State Univ., Long Beach 1984 Articles, Speeches & Seminars “Challenging Patent Validity at the USPTO: The Ins and Outs of Reexamination,” presented at Samsung SDI Co., Ltd., Seoul, South Korea, May 27, 2010. “Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc,” co-authored with Laura E. Battat, AIPPI e-newsletter 2010. “Handling Patent Claim Letters,” presented at Samsung SDI Co., Ltd., Seoul, South Korea, June 2, 2009. “Procedures and Strategies for U.S. Patent Prosecution Highway (PPH): Pilot Program for Korean Origination Applications” presented at Samsung SDI, Seoul, South Korea, June 3, 2009. “Preparing Your Patent Portfolio for the US Market,” presented at Innovation Norway, Oslo, Norway, May 28, 2009. “Recent Developments in US Patent Law,” presented at the Second Annual ITechLaw Tallinn Conference, Tallinn, Estonia, May 26, 2009. “A practical guide to the patent prosecution highway,” Managing Intellectual Property: The Global Magazine for Intellectual Property Owners, April 2009, http://www.managingip.com/Article/2167622/A-practical-guide-to-the-patent-prosecution-highway.html “Patent Portfolio Management Tips,” presented at the KOTRA & Knobbe Martens CES Reception, Las Vegas, January 6, 2009 “Landmark appeals court decision changes scope of what is protectable by patent: Best practices for software and business methods patents after Bilski” presented at KMOB, San Diego, December 10, 2008 “Indefiniteness: Recent Change in US Patent Case Law” presented at IMEC, Leuven, Belgium, November 3, 2008. “Patent Protection of Tech Innovation: Perspectives on the USPTO and the EPO Regimes” presented at IMEC, Leuven, Belgium, November 3, 2008. “U.S. Patent and Trademark Office and the Internet” presented at IMEC, Leuven, Belgium, November 3, 2008. “Patent Protection of Tech Innovation: Perspectives on the USPTO and the EPO Regimes” presented at Enterprise Estonia & ITechLaw Global Technology Law Conference, Tallinn, Estonia, June 9, 2008. “U.S. Patent and Trademark Office and the Internet” presented at IFCLA Conference, Paris, France, June 5, 2008. “Procedures and Strategies for U.S. Patent Prosecution Highway (PPH): Pilot Program for Korean Origination Applications” presented at Samsung SDI, Seoul, Korea, May 16, 2008. Moderator, “Intellectual Property and Licensing” International Technology Law Association Conference in Mumbai, India, February 8, 2008. “Recent Developments in U.S. Patent Law” presented at IMEC, Leuven, Belgium, November 5, 2007. “2007 Training and Seminar on the European Union, American, Japanese Intellectual Property Legal Systems, Strategies and Practices.” Seminar sponsored by the Chinese Intellectual Property Society and the Ministry of Information Industry Electronics Talent Exchange Center; Hangzhou, China, October 23-24, 2007 “Procedures for Designing Around a Patent” presented at Samsung Corning, Seoul, Korea, June 1, 2007. “The Pendulum is Swinging” presented at Samsung Display Interfaces, Seoul, Korea, May 29, 2007. “Case Summary: KSR International Co. v. Teleflex Inc., No. 04-1350, U.S. Supreme Court, April 30, 2007” SDIPLA Newsletter, Vol 8, Issue 6. May 2007. “Case Summary: Hakim v. Cannon Avent Group, PLC, et al., No. 2005-1398, Fed. Cir. February 23, 2007.” SDIPLA Newsletter, Vol. 8, Issue 5. April 2007. Moderator, “Managing Client Business Strategies” International Technology Law Association Conference in Chicago, Illinois. April 26, 2007. Moderator, “International Issues Facing Technology Companies” International Technology Law Association Conference in Bangalore, India, February 15, 2007. Moderator, “Intellectual Property Issues” International Technology Law Association Conference in Prague, Czech Republic, November 2, 2006 Moderator, “Competing with the Big Guys and Creating a High-Performance Team”, San Diego Software Industry Council, 2006 “After Final Prosecution: Procedures and Strategies”, presented at Samsung Display Interfaces, Seoul, Korea, April 27, 2006 and IMEC, Leuven, Belgium on September 18, 2006. “Proposed 37 CFR Rule Making”, presented at Samsung Display Interfaces, Seoul, Korea, April 27, 2006 and IMEC, Leuven, Belgium on September 18, 2006. “Inventorship and Declaration Practice” presented at Samsung Display Interfaces, Seoul, Korea, April 27, 2006 and IMEC, Leuven, Belgium on September 18, 2006. “Claim Construction After Phillips” presented at Samsung Advanced Institute of Technology, Kiheung, Korea, April 26, 2006 and IMEC, Leuven, Belgium on September 18, 2006. “Extraterritorial Applications of U.S. Patents” Presented at the International Technology Law Association’s 2nd International Asia Conference, Bangalore, India. February 2, 2006. “Practice and Procedure of ‘Swearing Behind a Reference’ Under 37 CFR 1.131”, Korean Patent Attorneys Association, Seoul, Korea, June 2, 2005 “Exploring the Landscape of Open Source Licenses”, Presentation to Licensing Executives Society, San Diego Chapter, April 19, 2005 “Issues for Standards-Setting Bodies In Balancing Patent Policies With Open Source Software”, March 2, 2005, Unpublished manuscript posted at Intellectual Property Owners Association website Moderator, Computer Law Association’s Inaugural Indian Conference, February 2005. Moderator, Computer Law Association’s European Conference, Stockholm, November 2004. “How to Effectively Build and Protect Business Assets With a Strategic Patent Portfolio”, University of San Francisco Intellectual Property Law Bulletin, Volume 9, Fall 2004, Issue 1 “Open Source’s Big Gamble: Will SCO Be The Croupier?” presented at IT meets Telecom, November 13, 2003 and published in International Legal Strategy (Legal Risk Management for Japan Business Executive, Vol. 12-12, December 15, 2003 “A Hat Trick for the Software Inventor”, Computer Law Association Bulletin, Volume 18, No. 4, 2003 “How and When to Prepare for Counsel Opinions”, presented at IMEC, Leuven, Belgium, November 17, 2003 “Licensing Do’s and Don’ts”, presented at IMEC, Leuven, Belgium, November 17, 2003 “Copyright and Trade Secret Developments: The SCO v. IBM Lawsuit” presented at Intellectual Property Issues Facing California Businesses, San Diego, California October 2, 2003 “Licensing and Internet Developments” presented at Intellectual Property Issues Facing California Businesses, San Diego, California October 2, 2003 “Intellectual Property Legislative and Case Law Update: The Year in Review” presented at Intellectual Property Issues Facing California Businesses, San Diego, California October 2, 2003 “U.S. Continuation Application Practice Strategies”, Samsung Digital Media, Suwon City, Korea, April 22, 2003, published in “Patent and Trademark”, Korean Patent Attorneys Association, December 5, 2003 “Recent Selected U.S. Court Decisions Relating to Patent Law”, Korean Patent Attorneys Association, Seoul, Korea, April 23, 2003 “2002 Selected U.S. Court Decisions Relating to Intellectual Property Law”, presented in Australia and New Zealand, October/November, 2002 “2002 Selected U.S. Court Decisions Relating to Patent Law” Power Point Presentation, presented in Sydney, Australia, October, 2002 “2002 Update On Software and Business Method Patents: The U.S. Perspective” Power Point Presentation, presented in Melbourne, Australia, October, 2002 “EPO Clamps Lid Down On Certain PCT Applications Filed By U.S. Tech Industry,” San Diego Intellectual Property Law Association website, October 2002 “Are Your Company’s Crown Jewels Secure?: Building An Effective Patent Portfolio,” San Diego Daily Transcript, September 19, 2002 “La vente ou l’offre de vente en tant qu’obstacle a la brevetabilite (Etats-Unis)” (On-sale bar invalidating patent rights by offers of sale), Chroniques De L’Etranger, No 736-II-32, French Patent Office Journal “Business Method Patents and Related Issues,” Knobbe, Martens, Olson & Bear, LLP, 11th Annual Intellectual Property Law Seminar, March 17 - 20, 2002 “Inbound International Patent Prosecution: A Lecture to San Diego First Year Attorneys at Knobbe, Martens, Olson & Bear, LLP”, March 12, 2002 “Are Your Crown Jewels Safe?: Building an Effective Patent Portfolio,” Creative Strategies for Building and Enforcing Your Intellectual Property Portfolio, San Diego, October 4, 2001 “Basic U.S. Patent Law”, presented at KPN Telecom, The Hague, Netherlands, May, 2001 “Recent Changes to U.S. Patent Statutes: American Inventors Protection Act (AIPA),” presented at KPN Telecom, The Hague, Netherlands, IMEC vzw, Brussels, Belgium, and Ericsson, Dusseldorf, Germany, May, 2001 “What Does Festo Mean?,” presented at KPN Telecom, The Hague, Netherlands, IMEC vzw, Brussels, Belgium, and Ericsson, Dusseldorf, Germany, May, 2001 “Patent Course for Engineers,” presented at Reef, Paris, France, May 28, 2001 “Preparing Claims for a U.S. Patent Application Which Was First Filed in Europe,” presented at Office Van Malderen, Brussels, Belgium, May, 2001 “U.S. Patent Practice in Software, e-Commerce and Business Methods,” Knobbe, Martens, Olson & Bear, LLP, 10th Annual Intellectual Property Law Seminar, February 21-23, 2001 “Intellectual Property Basics for U.C.S.D. Extension Student,” September 25, 2000 “Claim Jumping on the Newest Frontier: Trademarks, Cybersquatting, and the Judicial Interpretation of Bad Faith,” International Legal Strategy, August 15, 2000 and UCLA Entertainment Law Journal, Vol. 8, No. 1, Fall 2000 “E-Commerce Patent Rush: Panacea or Plague,” World Computer Law Congress, Washington, D.C., April 13-14, 2000 “Software and Business Method Patents: The U.S. Perspective,” Knobbe, Martens, Olson & Bear, LLP, 9th Annual Intellectual Property Law Seminar, March 8-10, 2000 “Resolving Conflicts Between U.S. Trademarks and Domain Names,” International Legal Strategy, November 15, 1999 “Resolving Conflicts Between U.S. Trademarks and Domain Names,” Asian Patent Attorneys Association 43rd Council Meeting in Kyongju, Korea, October, 1999 “Electronic Commerce Companies Gain Legal Victory Under State Street Bank: Last Barrier Falls to Seek Software Patents For Doing Business on the Internet”, Thomas Jefferson Law Review, July, 1999 “Intellectual Property Strategies for the High Tech Company,” June, 1999 Various case summaries, European Intellectual Property Review, 1999-2006 Re Galanthamine, Federal Court of Appeals, European Intellectual Property Review, Volume 32, Issue 6, 2010. Re The University of South Carolina, Federal Court of Appeals, European Intellectual Property Review, Volume 32, Issue 6, 2010. Re Bose Corp, Federal Circuit No. 2008-1448, European Intellectual Property Review, Vol. 32, Issue 5, 2010. Wyeth v. Kappos, Federal Circuit No. 2009-1120, European Intellectual Property Review, Vol. 32, Issue 5, 2010. Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., Federal Circuit Court of Appeals, European Intellectual Property Review, Vol. 32, Issue 1 2010 Autogenomics Inc. v. Oxford Gene Tech Ltd., Federal Circuit No. 08-1217, European Intellectual Property Review, Vol. 31, Issue 11, 2009 Takeda Pharmaceutical Co. Ltd. v. Doll, US Federal Circuit Court of Appeals, European Intellectual Property Review, Vol. 31, Issue 9, 2009 Aristocrat Technologies Australia PTY Ltd et al. v. International Game Technology and IGT, US Federal Circuit Court of Appeals No. 08-1016, European Intellectual Property Review, Vol. 31, Issue 6, 2009 Swanson, Re, US Federal Circuit Court of Appeals No. 2007-1534, European Intellectual Property Review, Vol. 31, Issue 1, 2009 Quanta Computer Inc v LG Electronics Inc, , European Intellectual Property Review, Vol. 30, Issue 12, 2008 Paice LLC v Toyota Motor Corp., Court of Appeals for the Federal Circuit, October 18, 2007 European Intellectual Property Review, Volume 30, Issue 3, 2008 SanDisk Corp. v. STMicroelectronics, Inc. European Intellectual Property Review, Vol 29, Issue 9. September 2007 Amgen Inc v Hoechst Marion Roussel, Inc, European Intellectual Property Review, Vol 28, Issue 11, November 2006 eBay, Inc v MercExchange, LLC, European Intellectual Property Review, Vol 28, Issue 8, August 2006 Storage Technology Corporation v. Custom Hardware Engineering & Consulting, Inc., European Intellectual Property Review, Vol. 28, Issue 4, April 2006 Genzyme Corp v Transkaryotic Therapies Inc., European Intellectual Property Review, Vol. 26, Issue 6, June 2004 Assessment Technologies of Wisconsin, LLC v. WIREdata Inc., European Intellectual Property Review, Vol. 26, Issue 5, May 2004 Integra Lifesciences v. Merck KGaA, European Intellectual Property Review, Vol. 25, Issue 11, November 2003. LG Electronics Inc. v Asustek Computer Inc., European Intellectual Property Review, Vol. 25, Issue 9, September 2003 Rambus Inc. v Infineon Technologies, European Intellectual Property Review, Vol. 25, Issue 9, September 2003 Moseley v V Secret Catalogue, Inc., European Intellectual Property Review, Vol. 25, Issue 7, July 2003 Dun & Bradstreet Software Servs. v Grace Consulting, Inc., European Intellectual Property Review, Vol. 25, Issue 6, June 2003 Holmes Group, Inc. v Vornado Air Circulation Systems, Inc., European Intellectual Property Review, Vol. 24, Issue 10, October 2002 Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., European Intellectual Property Review, Vol. 24, Issue 9, September 2002 EZ Dock Inc. v Schafer Systems, Inc., European Intellectual Property Review, Vol. 24, Issue 8, August 2002 Symbol Technologies Inc. v Lemelson Medical, Education & Research Foundation, European Intellectual Property Review, Vol. 24, Issue 7, July 2002 Playboy Enterprises, Inc. v Terri Welles, European Intellectual Property Review, Vol. 24, Issue 6, June 2002 J.E.M. Ag Supply Inc. v Pioneer Hi-Bred Int’l Inc., European Intellectual Property Review, Vol. 24, Issue 4, April 2002 Kustom Signals, Inc. v Applied Concepts Inc., European Intellectual Property Review, Vol. 24, Issue 2, February 2002 Sandt Technology, Ltd. v Resco Metal and Plastics Corp., European Intellectual Property Review, Vol. 24, Issue 2, February 2002 Gart v Logitech Inc., European Intellectual Property Review, Vol. 23, Issue 12, December 2001 Netword, LLC v Centraal Corp., European Intellectual Property Review, Vol. 23, Issue 11, November 2001 Group One, Ltd. v Hallmark Cards, Inc., European Intellectual Property Review, Vol. 23, Issue 10, October 2001 Lockheed Martin Corp. v Space Systems/Loral, Inc., European Intellectual Property Review, Vol. 23, Issue 8, August 2001 MDI v Traffix, European Intellectual Property Review, Vol. 23, Issue 7, July 2001 Various case summaries, Computer Law Association Bulletin 1998-2003 Rambus Inc. v. Infineon Technologies, Computer Law Association Bulletin, Vol. 18, No. 2, 2003 Harold L. Bowers v. Baystate Technologies, Inc. Computer Law Association Bulletin, Vol. 18, No. 1, 2003 Symbol Technologies, Inc. v. Lemelson Medical, Education and Research Foundation, L.P., Computer Law Association Bulletin, Vol. 17, No. 2, 2002 Kustom Signals, Inc. v. Applied Concepts, Inc. Computer Law Association Bulletin, Vol. 16, No. 4, 2001 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Computer Law Association Bulletin, Vol. 16, No. 1, 2001 Atmel Corp. v. Information Storage Devices, Inc. Computer Law Association Bulletin, Vol. 15, No. 1, 2000 WMS Gaming Inc. v. International Game Technology, Computer Law Association Bulletin, Vol. 14, No. 3, 1999 AT&T Corp. v. Excel Communications, Inc., Computer Law Association Bulletin, Vol. 14, No. 2, 1999 Personalized Media Communications, L.L.C. v. International Trade Commission, Computer Law Association Bulletin, Vol. 14, No. 1, 1999 Kahn v. General Motors Corp., Computer Law Association Bulletin, Vol. 13, No. 3, 1998 “How to Start and Manage a High Tech Company”, UCSD CONNECT, June, 1998 UCSD CONNECT Entrepreneurship Class Instructor, June, 1998 “How to Succeed Against Patent Enforcement in the United States,” American Chamber of Commerce, Seoul, Korea, April, 1998 “How to Obtain Strong Patent Protection in the United States,” Samsung Electronics, Seoul, Korea, April 1998 Commentary on Copyright and Right of Publicity, KPBS Radio, June, 1997 “Professional Ethics”, Sequoia Seminars, January, 1997 Various Case Summaries, Computer Law Assoc. Bulletin, 1996 “Drafting and Negotiating Selected Business Documents”, State Bar of California, License Agreements, 1995 “Copyright vs. Patent”, San Diego Daily Transcript article, CONNECT Panel Discussion, 1995 “The Implications of Look and Feel Protection on Multimedia Products”, Multimedia Law Seminar, 1994-1995 “Intellectual Property Protection”, AEA, May, 1994 “Pitfalls of Protecting Computer Programs”, International IP Sem., 1992-1995 Articles, AEA, San Diego Council, Newsletter, 1993-1994 “Is The Technology Yours to Sell?”, CONNECT, 1992 “Patents, Copyrights and Trade Secrets”, CONNECT, 1993 & Atari Games, 1990 Editorial and Article, Penasquitos News, 1988 “Embedded Real-Time Expert System”, DASC Conference, 1987 Awards & Honors Who’s Who Legal: California 2009, One of California’s Leading Trademark Lawyers Super Lawyer, Super Lawyers- Southern California Super Lawyers- San Diego Edition. June 2010. Who’s Who Legal: The International Who’s Who of Business Lawyers 2010 Who’s Who Legal: The International Who’s Who of Business Lawyers 2009, Trademarks, Internet & E-Commerce San Diego County Top Attorney, The Daily Transcript, 2009 Super Lawyer, Super Lawyers- Southern California Super Lawyers- San Diego Edition. June 2009. Top 25 Leading Portfolio Managers, Daily Journal, April 2009 San Diego Super Lawyers: Rising Star, 2009 Who’s Who Legal: California 2009, One of California’s Leading Business Lawyers Who’s Who Legal : The International Who’s Who of Business Lawyers 2008, Internet & E-Commerce In 2007, Mr. Carson was nominated as the Who’s Who in California Legal for Trademark Representation Selected by Super Lawyers magazine, May 2007, May 2008, May 2009, May 2010 Awarded World’s Leading Trademark Law Practitioner, Euromoney’s Legal Media Group, July 2006 International Who’s Who of e-Commerce Lawyers (2nd Edition), 2001 Awarded World’s Leading Trademark Law Practitioner, Euromoney’s Legal Media Group, July 2000 Mr. Carson is an AV-rated attorney, a peer-awarded honor given by Martindale-Hubbell.
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